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IP Monetization 2016: Maximize the Value of Your IP Assets

Speaker(s): Ashley C. Keller, Dan Lonkevich, David L. Cohen, Ira Jay Levy, Jorge M. Torres, Jose A. Esteves, Kimberly Chotkowski, Michael D. Friedman, Michael Kallus, Peter D. Holden, Ph.D., Stacey L. Cohen, Victoria F. Maroulis
Recorded on: Apr. 27, 2016
PLI Program #: 150235

Ashley Keller is a Managing Director of Burford Capital.

Mr. Keller co-founded Gerchen Keller Capital and as Managing Director helped steer its growth to $1.3 billion in assets under management prior to its acquisition by Burford.

Before co-founding Gerchen Keller, Mr. Keller was a partner at Bartlit Beck Herman Palenchar & Scott LLP, The American Lawyer’s litigation boutique of the year, where he handled various trial and appellate matters involving multi-billion-dollar securities and patent cases, contractual disputes and mass-tort class actions.

Mr. Keller has also worked as an analyst at Alyeska Investment Group, a Chicago-based market neutral hedge fund, where he focused on investments in companies facing litigation and other complicated regulatory matters.

Before practicing, Mr. Keller was a law clerk for Judge Richard Posner at the U.S. Court of Appeals for the Seventh Circuit and Justice Anthony M. Kennedy at the Supreme Court of the United States. He graduated magna cum laude from Harvard College and received an MBA from the University of Chicago Booth School of Business and a JD from the University of Chicago Law School, where he graduated first in his class.

David L. Cohen, is the President of DLCIP Corporation which provides legal advice through the law firm of David L. Cohen, P.C. and IP and Business consulting services through Kidon IP Corp.  David was admitted to practice in New York in 1999 and is also admitted to practice in New Jersey, the District of Columbia and before the USPTO.

David’s hand-on experience includes strategic litigation planning; global project management; patent monetization; FRAND licensing; building and managing legal and IP teams; patent licensing and negotiations; global anti-trust; strategic IP portfolio development and acquisition; IP strategy and opinion work; patent and trade secret assessments; and IT needs, strategy, & design.

Prior to founding David L. Cohen, P.C. and Kidon IP Corporation, David was the Chief Legal and IP Officer of FORM Holdings, Inc. (f/k/a/ Vringo, Inc.) where he created a world class in-house team that spearheaded an effective global monetization program and brought in over 40MUSD in licensing revenue while pioneering numerous cutting edge, global monetization, enforcement and structured innovation techniques.

Prior to FORM, David was senior in-house counsel at Nokia Corporation, where he participated in or managed projects that generated over 1BUSD in revenue. David worked at the law firms of Lerner David and Skadden Arps before joining Nokia and clerked for Chief Judge Carman of the Court of International Trade. 

David has a BA and M. Phil in the History and Philosophy of Science, an MA in History and an MA in Legal and Political Theory. His received his juris doctorate from Northwestern University School of Law in 1998, cum laude, where he was on law review. David has multiple publications to his credit, is a co-inventor on two patents, and is a frequent speaker at conferences.  David was listed in IAM 300 The World’s Leading IP Strategists in 2015 and 2016.

Jorge M. Torres
Venture Partner
Silas Capital

Jorge M. Torres is a Venture Partner at Silas Capital, a New York-based investment firm that works with early growth-stage consumer businesses. The firm has invested in consumer products companies drawn from various categories such as Casper (housewares), Bare Snacks (packaged foods), Lifefactory (housewares), Tracksmith (apparel), Ringly (jewelry), and others.

Before joining Silas Capital, Jorge practiced intellectual property law at Skadden, Arps, Slate, Meagher & Flom, Milbank Tweed, Hadley & McCloy, and at Fish & Richardson. His practice focused on litigating complex patent infringement lawsuits, technology M&A, and performing legal due diligence for private equity and public markets investors. Earlier in his career, he clerked for the Honorable Raymond C. Clevenger III on the U.S. Court of Appeals for the Federal Circuit.

Jorge holds a BS in molecular biophysics and biochemistry from Yale and a JD from the University of Pennsylvania Law School. He is a member of Kauffman Fellows, a network of investors from 50+ countries who have completed a competitive two-year leadership development program dedicated to the world of innovation investing. Jorge also mentors entrepreneurs in New York and Puerto Rico through Founder Institute, the world's largest entrepreneur training and startup launch program.

Kimberly S. Chotkowski is an accomplished intellectual property attorney with 18 years of patent litigation, licensing and prosecution experience. For 4 years in a row, Kim has been listed in the Intellectual Asset Magazine as one of the top 300 IP Strategists in the World. She has been involved in litigating cases in a wide variety of  technologies including wireless and wired telephony (handset, air interface and base station), microprocessors, semiconductors, USB, touch screens, automotive components, active storage systems, editing software, video on demand, pharmaceutical etc. Kim is a proven leader with capabilities in building litigation teams, strategic thinking and implementing workable plans.

Kim has an established track record of litigating/negotiating complex, global IP licenses and monetization opportunities specializing in assisting clients in maximizing their financial return on research and development via licensing their technology. Kim’s experience provides significant global IP licensing knowledge having worked with a licensing firm who negotiated with more than 70 companies worldwide, obtaining licenses worth approximately over $2 billion on behalf of their clients. Kim supports her clients’ licensing efforts in a broad range of technologies including semiconductor processing and circuits, digital cameras, cell phones, optical storage, wired and wireless communications, internet applications, chemical arts, telecommunications and television, automotive, bioelectrical/biomechanical and pharmaceutical arenas.

Kim also offers strategic IP portfolio management. By tailoring her proactive IP management approach to each individual client’s business and technical goals, she develops cost-effective, value-generating portfolios that assist clients by protecting core technology, licensing and patent brokering. Kim has managed and served as an expert witness in various patent litigations. Kim is an inventor herself holding two patents in antenna technologies.

A frequent speaker, Kim has covered pertinent issues related to IP Monetization, international licensing and international patent portfolio management at the Licensing Executives Society, the American Bar Association, PLI and other independent professional conference forums. She has spoken on behalf of the US State Department on licensing in China. Kim holds a BS in electrical engineering and a BS in Humanities/History from Worcester Polytechnic Institute, a JD from the Franklin Pierce Law Center and an MBA, concentration in international business and finance, from Sacred Heart University.

Kim is a member of the Pennsylvania, Connecticut and New York and Patent Bars, a Certified Licensing Professional and a former committee member of the Intellectual Property Owners and an active participant in the Licensing Executive Society’s effort to provide standards of practice to the licensing profession.

Stacey L. Cohen represents clients in all aspects of intellectual property litigation, arbitration and counseling with a focus on patent, trade secret and other technology and science-based disputes. In addition to litigation, Ms. Cohen’s practice includes counseling on acquiring, evaluating, licensing, enforcing and protecting intellectual property rights and has served as the technical liaison with in-house scientists in consumer class actions.

Ms. Cohen has advised clients in the pharmaceutical, medical device, biotechnology, financial services, consumer electronics, retail, cosmetics, semiconductor, food services equipment and IT industries. Notable accomplishments include:

  • serving as trial counsel in a jury trial involving virtual reality technology before the U.S. District Court for the Northern District of Texas, which resulted in a $500 million verdict against Facebook subsidiary Oculus and its executives for copyright infringement, breach of contract and false designation;
  • a complete victory in a bet-the-company arbitration involving an IP licensing dispute;
  • representing multiple financial services entities in an industry-wide patent litigation, which resulted in findings of no infringement by all clients;
  • ensuring that a client’s patent enforcement action remained in the original jurisdiction;
  • securing a client’s freedom to operate by proving invalid a competitor’s patent;
  • successfully resolving numerous patent and trade secret disputes through mediation and other alternative dispute resolution processes on favorable terms for clients; and
  • serving as author of an amicus brief submitted to the Supreme Court of the United States on behalf of the American Bar Association, whose proposals were largely adopted by the Supreme Court.

Ms. Cohen is a frequent contributor to publications, including Law360, BNA’s Patent, TradeĀ­mark & Copyright Journal, Intellectual Property Magazine, Practical Law The Journal and the AIPLA FDA Flash, and has been quoted in publications including Forbes, Law360, the ABA Journal and Intellectual Asset Management Blog concerning recent rulings on patent law. She has presented at the Practising Law Institute IP Monetization seminar and the NYIPLA Patent CLE Seminar, as well as at the International IP ADR Center Program in Seoul, Korea.

Ms. Cohen devotes substantial time to pro bono work for the Innocence Project, including authoring two petitions for writs of certiorari submitted to the Supreme Court of the United States on behalf of a death row inmate. She was named a 2015 Empire State Counsel Honoree by the New York State Bar Association for her pro bono work.

She is a member of the Skadden group recognized by BTI Consulting as one of the top legal advisers general counsel turn to for pharmaceutical work; as one of the top six IP litigation powerhouses in BTI’s Litigation Outlook 2017 report; by Law360 among its 2015 Technology Practice Groups of the Year for courtroom victories in the technology sector; and by The National Law Journal as one of the country’s leading IP practices in its IP Hot List for multiple years.

Victoria Maroulis is the Managing Partner of the Quinn Emanuel Silicon Valley Office.  Mrs. Maroulis is also Co-Chair of the firm’s National Life Science Practice.  Her practice focuses on intellectual property litigation.  She has litigated and provided counseling for companies on a broad range of patent, copyright, trademark, and trade secrets matters.  She has extensive experience in complex patent litigation in a variety of technologies including software, hardware, semiconductors, medical devices and biotechnology.  She has tried numerous high-stakes patent cases and argued multiple appeals.  She is a member of the bars of New York and California and is admitted to the Eastern District of Texas, Trial Bar of the Northern District of Illinois, Federal Circuit and the U.S. Supreme Court.  Victoria regularly lectures on IP matters, judges regional mock trial and moot court competitions, and has taught trial practice at Stanford Law School and the in house Quinn Emanuel program.  Among other honors, Victoria was selected as one of 10 Intellectual Property Rising Stars under 40 nationwide by Law360, named as one of 20 Most Influential Women in IP by Law360, and featured in The American Lawyer’s “45 under 45” list.

Michael recently joined Hilco Global from his position as Managing Director at Ocean Tomo, LLC, an intellectual property merchant bank. Michael led the Investments practice, which included Investment Banking, Asset Management and Investment Research.  As an IP investment banker, Michael executed IP financing, monetization and capital markets solutions for corporations and other intellectual property owners.  He also served as Chief Investment Officer of OT Asset Management, engaging in public equity, special situations, IP collateralized lending where intellectual property insight drives alpha creation.

Prior to joining Ocean Tomo in 2007, Michael founded and was Managing Partner of FHS Investments, LLC, a multi-strategy hedge fund.  Prior to that, he was a Managing Director at UBS where he ran a $3 billion portfolio as co-head of Special Situations for O’Connor hedge fund and proprietary Special Situations trading.  Mr. Friedman practiced mergers and acquisitions and securities law before entering investing and investment banking.

Peter, President of ipCreate, has more than 25 years in the investment and monetization of IP, from tech and patent licensing, to patent sales, IP venturing and IP Fund formation. He has a worldwide reputation for creating IP value and delivering top-quartile returns without litigation.

Prior to joining ipCreate, Peter was the Senior Vice President of Investments and Acquisitions at IPVALUE Management, Inc., a Goldman Sachs / General Atlantic backed IP monetization company which has generated over $1.3 Billion of IP revenues. In 2007, he was the founder and Managing Director of the IP Investment Group at Coller Capital Inc., a global Private Equity firm with over $18 Billion under management. In 1999, he was the founder and Managing Director of Invisible Hand LLC, a $48 Million IP venturing fund. In 1995, he was the SVP & Officer with University Patents, Inc., an AMEX listed outsourced university technology and patent licensing organization representing 30+ universities.

In 1990, Peter was the Global Technology Acquisitions & Partnerships Manager with Matsushita Electric (Panasonic) in Osaka, Japan. In 2014, he was chosen by Intellectual Asset Management Journal as the global top 40 most influential people in IP. In 2014, Peter was honored and awarded by The Korean Government for contributions to the monetization of Korean R&D globally.

Peter was also formerly a Research Fellow at Tokyo University and Senior Fellow at Wharton Business School.

Dan Lonkevich
Editor in Chief
The Patent Investor LLC

Mr. Lonkevich previously worked as the senior editor for The DealFlow Report, a publication of The Deal Pipeline, a unit of The Street Inc., from November 2009 to January 2015.

Prior to working at The DealFlow Report, Mr. Lonkevich was a reporter for Bloomberg News in New York from March 2000 until January 2009. During his tenure at Bloomberg, he covered the insurance business, mergers and acquisitions and oil and gas companies.

Prior to that, he worked as an associate editor for The National Underwriter from 1996 to 2000. Before that, he was a reporter for Bestweek, a newsletter  covering the insurance business published by insurance rating company A.M. Best Co. He worked at A.M. Best from 1990 to 1996.

He has an MA in English Literature from Washington University in St. Louis and a BA in English from the University of Rochester.

His favorite quote is from the 17th Century English poet John Dryden: “I am a little wounded, but I am not slain; I will lay me down to bleed a while. Then I’ll rise and fight again.”

Jose A. Esteves focuses on assisting clients in maximizing the value of their intellectual property and technology assets, including through strategic stand-alone transactions such as collaborations, joint ventures, cloud/outsourcing arrangements and other complex technology transactions; stand-alone and mergers-and-acquisitions-related development, licensing, supply, marketing and support arrangements; and IP monetization and financing transactions. Mr. Esteves also counsels clients on IP, technology and data legal and commercial issues, including with respect to privacy, cybersecurity and emerging issues in big data, artificial intelligence/analytics, internet of things and other key technologies, including in fintech, health care and autonomous vehicles. Mr. Esteves advises a diverse group of clients from the U.S. and abroad, including Europe, Asia and South America. Mr. Esteves also handles intellectual property and technology aspects of traditional mergers and acquisitions, financings, public offerings and commercial transactions. Intellectual Asset Management magazine, the leading trade publication focused on IP monetization, includes Mr. Esteves on its list of the “IAM Strategy 300 — The World’s Leading IP Strategists.”

Michael Kallus serves as the asset manager in Fortress Investment Group’s IP Finance Group, maintaining relationships with operating companies, banks, and law firms, coordinating intake and advising on potential patent backed investments, contributing to approval diligence and monitoring deal performance. Prior to his position at Fortress, Michael worked with the business development and acquisitions groups at RPX Corporation for over four years. Before that, Michael was a litigator with several national practices, focusing on patent litigation, licensing, and M&A support. Michael began his career in law as a clerk to the Hon. Chief Judge C. Roger Vinson in the Northern District of Florida. Michael is a graduate of the University of California Berkeley and the University of Virginia School of Law.